Please note that the faculty members listed for this course are subject to change prior to the actual course date.
Post-grant proceedings, most notably reissue and reexamination, are indispensable tools for every patent prosecutor and litigator. This two-and-a-half-day course is designed to sharpen the edges of those tools in your toolbox. The course provides attendees with a comprehensive knowledge of all aspects of post-grant proceedings with intense emphasis on reissue and reexamination, including both ex parte and inter partes reexamination.
Reexamination and reissue offer opportunities for patent owners hoping to immunize their patents granted before KSR v. Teleflex, by providing an opportunity for the PTO to confirm the patentability of the claims, with or without amendment, under KSR’s new obviousness rubric.
Reexamination has also evolved in the last few years to become increasingly useful for patent challengers seeking to limit infringement risks or even to take another bite at the patent after a disappointing litigation result. The benefits of a successful third-party-requested reexamination are significant: Cancellation of claims, elimination of liability for past infringement, intervening rights to continue accused infringement in the future, opening up design-around opportunities, creating a more favorable prosecution history for the purpose of claim construction, bolstering an inequitable conduct defense, etc. Those benefits, along with the evidentiary, procedural, timing and forum advantages that reexamination offers – the expertise of the PTO’s reexamination unit as their decision-maker rather than a jury in the Eastern District of Texas, for example; the absence of a presumption of validity of the patent; the lower preponderance burden of proof to show invalidity; and the broadest reasonable claim construction by the PTO – can make reexamination an attractive option to those facing infringement risks.
Not surprisingly, the popularity of reexamination has increased dramatically over the last several years. That is especially true for inter partes reexamination. The course thoroughly covers the differences between ex parte and inter partes reexamination so that attendees can more confidently choose which type of proceeding is better suited for their cases. Attendees will leave the course with a finer appreciation of the different estoppels – both official and unofficial – that attach to reexamination and a better understanding of why inter partes reexamination is becoming increasingly recognized as a superior option in many circumstances.
This timely course will teach attendees how to best utilize reissue, reexamination and other post-grant proceedings as alternatives or adjuncts to litigation (with an understanding of the interplay between court and PTO proceedings) and as patent portfolio management tools so as to best position clients for success in the post-KSR world.
Legal ethics in the context of the duty of disclosure that is renewed during reexamination and reissue prosecution will be presented from 10:45 a.m. to 11:45 a.m. on the third day, as currently estimated.